Thursday, January 24, 2013

The Board affirmed a refusal to register the purported mark shown below for "hooded sweatshirts; jackets; coats," on the ground that the design is merely ornamental and fails to function as a trademark. Because Lululemon's application was not based on actual use, it could not claim acquired distinctiveness. Its attempt to prove inherent distinctiveness was unsuccessful, as was its assertion that the design serves as a secondary source indicator. In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013) [precedential].

An applicant may overcome an ornamentality refusal in any of three ways: (1) by proving inherent distinctiveness; (2) by establishing acquired distinctiveness; or (3) by showing that the mark is registered for other goods or services, and thus that the applied-for mark serves as a secondary source indicator. But because Lululemon relied only on Sections 1(b) and 44(e) as the bases for its application to register, and did not claim use under Section 1(a), it could not rely upon or show acquired distinctiveness. That left avenues (1) and (3).

Inherent Distinctiveness: An ornamental design may be inherently distinctive if its principal function is to identify source, with its ornamental aspect being only incidental. A design that is a mere refinement of common or well-known forms of ornamentation will not be viewed as a source indicator by the consuming public.

Lululemon asserted that its applied-for mark is distinctive, and further that competitors use similar "large marks" on their clothing items, leading consumers to recognize Lululemon's design as a source identifier rather than merely an ornament.

Examining Attorney Ellen J.G. Perkins contended that, due to the large size of the design, consumers would not view it as a mark. She also pointed to third-party registrations showing that similar designs are registered on the Supplemental Register or under Section 2(f) [i.e., they were deemed not to be inherently distinctive].

Based on the record evidence, the Board observed that, although it "may have once been the practice in the clothing industry to limit logos to small sizes in discrete areas rather than have them 'emblazoned' across a garment, that is no longer standard practice." In short, the large size of Lululemon's design does not per se rule out its registrability.

However, the Board found that Lululemon's wave design "is rather simple and looks like piping." It is, the Board concluded, "likely to be perceived by the public as merely ornamental."

Secondary Source Indicator: The Board recognized that ornamentation on clothing (e.g., logos on T-shirts) may be of a "special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source."

In the context of an ornamentality refusal, "secondary source" simply means that the use of the design or words would be perceived by the consumer as an indicator of source due to the applicant's prior use or registration of the mark for other goods or services (not the applied-for goods).

The Examining Attorney contended, however, that the applied-for mark and the registered mark (shown below) are not the same mark. The Board agreed. The registered mark comprises a wave design "confined in and highlighted by a contrasting-hued circle." The sides of the registered mark are thicker and closer together than the applied-for mark, and the registered mark is not of uniform thickness.

One might say that, in the Board's eye, Lululemon's secondary source argument was not a "lulu" but rather a "lemon."

And so the Board affirmed the refusal to register.Read comments and post your commenthere.

4 Comments:

Can anyone tell me the difference between a merely ornamental refusal and a refusal based on trade dress that is not inherently distinctive? The analyses for each type of refusal is different and yet there is no reason to make a distinction. The only time merely ornamental is a different type of refusal is when it's the kind of ornamentation that is never capable of acquiring distinctiveness.

Not sure that I understand your question, but I disagree that there is no distinction between ornamental use of a mark and non-distinctive trade dress.

A mark refused registration grounded in ornamental use "could be" inherently distinctive. A registration for other goods would suffice in showing that the mak functions as a secondary source indicator. Proving secondary meaning is just another way to overcome an ornamental refusal.

Let me correct my statement just slightly. There are two types of ornamentality refusals. One is appropriate, and that is when it is the manner in which the subject matter is used that makes it merely ornamental (e.g. too large on a t-shirt..although that is apparently no longer true according to Lululemon). The other type of merely ornamental refusal is the kind that overlaps with non-distinctive trade dress and that is what was at issue here, as expressly stated by the TTAB. If the "mark" was used as a trademark might be used, then why was this ornamental as opposed to trade dress that simply wasn't inherently distinctive?